Hildreth v. D. S. McDonald Co.

164 Mass. 16 | Mass. | 1895

Allen, J.

There is no question of trademark in this case. The only question is, whether the plaintiff is entitled to an injunction on the ground that the defendant company was passing off its molasses candy as and for molasses candy made by the plaintiff, and thus injuring the plaintiff by unfair competition. On the report it would seem that others before the plaintiff had made molasses candy of the same size and shape, and wrapped the pieces in the same kind and size of paper, with twisted ends. To this combination, which was not original with the plaintiff, he added the printing of the word “ Velvet ” in red script letters upon the middle and ends of the wrappers. The defendant company used the same combination of size and shape of the candy, and the same kind and size of paper and manner of wrapping, all of which it had a right to do. But to this it added the printing in Roman letters, instead of script, of another word, viz. “ McDonald,” in red ink upon the middle of the wrappers, but not upon the ends. It is found that the public is thereby in fact deceived into believing that the defendant’s goods are the plaintiff’s goods, and that the resemblance was not accidental. It is not expressly stated, but we must assume that the public who are deceived are persons of ordinary caution and prudence. The injunction which was granted was expressly limited to the printing in red letters upon wrappers of the same kind as those used by the plaintiff, to be used for pieces of molasses candy of the same size and shape.

There are decisions to the effect that color alone cannot become a valid trademark, and that a red label on a yellow wrapper, or a white label on a red box, cannot be registered. Re Landreth, in Browne, Trademarks, § 89 d. Payson's Indelible Ink, in Browne, §§ 271, 272. Philadelphia Novelty Manuf. Co. v. Rouss, 40 Fed. Rep. 585. Philadelphia Novelty Manuf. Co. v. Blakesley Novelty Co. 40 Fed. Rep. 588. Fleischmann v. Starkey, 25 Fed. Rep. 127. Faber v. Faber, 49 Barb. 357. In re Hanson's Trademark, 37 Ch. D. 112. But where for the purpose of presenting his goods to the public a manufacturer has adopted a particular combination of features, in part old a.nd in part new, he may be entitled to protection against a palpable imitation. The case of the plaintiff is not very strong on the facts, yet he seems to be entitled to the carefully limited injunction which was granted. The case of Lever v. Goodwin, 36 Ch. D. 1, is in point upon the principle involved, though the facts there were stronger for the plaintiff than the facts here. See also Fischer v. Blank, 138 N. Y. 244 ; Pillsbury v. Pillsbury-Washburn Flour Mills Co. 64 Fed. Rep. 841; and the rule stated at the end of Dover Stamping Co. v. Fellows, 163 Mass. 191; Reddaway v. Banham, [1895] 1 Q. B. 286, 294, per Lopes, L. J.

In the opinion of a majority of the court, the entry must be,

Decree affirmed.